Appeal 2006-2449
Application 10/221,869
Claims 4-7, 29-32, 34, and 35 are rejected under 35 U.S.C. § 102(e) as
being anticipated by, or alternatively under 35 U.S.C. § 103(a) as being
obvious over, Funayama.
Finally, claims 8 and 33 are rejected under 35 U.S.C. § 103(a) as
being obvious over Funayama.
The dispositive issue in this appeal is whether Appellants have
established error on the Examiner's part in finding that each of Akinaga,
Litvinov and Funayama anticipatorily discloses magnetic thin films which
include non-oxidized magnetic metal grains and a method for manufacturing
such thin films.
As correctly found by the Examiner, all of the aforementioned
references expressly teach specific magnetic metal compounds which do not
include oxygen as a component thereof (Akinaga: Abstract, claim 4;
Litvinov: col. 3, ll. 21-23 and claim 7; Funayama: col. 7, ll. 41-64). We are
unpersuaded by Appellants' argument for novelty (Br. 5) because it is based
on the legally erroneous proposition that the references must expressly
describe their magnetic compounds with the "non-oxidized" adjective
recited in, for example, claim 3. It is well settled that a reference does not
fail as an anticipation merely because it does not contain a description of
the subject matter of the appealed claims in ipsissimis verbis. In re May,
574 F.2d 1082, 1089 (CCPA 1978).
For the above stated reasons, we fully agree with the Examiner's
finding that claims 3 and 28 are anticipated by each of Akinaga, Litvinov,
and Funayama.
We also agree with the Examiner's finding that method claim 9 is
anticipated by Funayama. Although Appellants may be correct that
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